The Smiley Face Trademark: Can You Really Own a Smile?

Let’s list our premises: The Smiley Face is a common cultural symbol. People put smiley faces on cookies quite often cookies with smiley faces are common in bakeries and grocery stores. Given those premises, should someone be able to trademark “Smiley Face” as it relates to cookies? Someone did! In 1987, Eat’n Park Corporation of Homestead, a company that operates a chain of restaurants, has owned a trademark for Smiley Face Cookies®. The company has vigorously defended that trademark, having sued seven companies. They have now sent a cease and desist to the Smiley Face Cookie Company in St. Louis.

These are Cookies with Smiley Faces, they are not Smiley Face Cookies®

The bakery in St. Louis, McArthur’s Bakery, has been making Smiley Face cookies since the 1970s. Today, they have started a company to give work to adults with disabilities, who make the cookies with smiley faces drawn on them with icing. Of course, many other bakeries have long made and sold them. But, not all of them tried to trademark them and so profit off a generic cultural symbol.

Eat n’ Park® started reaching out to McArthur’s Bakery in 2016. Scott Rinaberger, the founder of Smiley Face Cookie Company in St. Louis ignored the letters, thinking that since his bakery had been making smiley face cookies for decades, they had precedence:

One of the areas that we think we have precedence, besides us doing it before they had their trademark, is it’s becoming quite generic and there are hundreds of bakeries around the United States making smile cookies and calling them either smiley face cookies or smile cookies.

He’s right, the smiley face is a generic symbol and has been for decades. However, Eat n’ Park® claims it’s smiley face design is “iconic.”

We are not seeking to profit from an agreement with McArthur’s Bakery or to stop their good work; we simply want to do what’s required by the law to uphold our trademarks. We have numerous licensing agreements in place across the country as a result of similar conversations we’ve had with many businesses since earning our trademarks.

Eat’n Park® has owned federally registered trademarks for the word mark Smiley® as it relates to cookies and for our iconic Smiley Face design since we began serving Smiley® Cookies in Eat’n Park® restaurants in the 1980s. To maintain our trademarks, we are required to defend our rights by preventing third parties from using these trademarks. We make every effort to engage in direct conversations to resolve these issues without taking legal action.

First, no company is required by law to uphold their trademark, they are simply beholden to do so should they want to keep it. Second, if they were not seeking to profit, then why do they have licensing agreements?

However, this company, in my opinion, has trademarked a generic cultural symbol that consists of simple geometric shapes. They have also trademarked a common English word that names this symbol. What’s more, they have trademarked a common application of the symbol, that is, placing it on a cookie with piped-on icing.

While a company must defend its trademark lest it loses it, defending your trademark can also cause you to lose it. As far as I can determine, Eat n’ Park® has been able to convince other companies to enter licensing agreements with them. That’s right, they get paid when someone paints a smiley on a cookie. If they should be taken to court, there is no guarantee the court will see it their way. History tells us that those seeking to defend such trademarks often lose them when a court decides that they are attempting to defend a trademark of a common word, name, or generic symbol.

More Landmark Food Trademark Battles: The “Smiley” case is just one example of the thin line between a generic description and a protected brand. Explore these other articles about food trademarks:

The Zatarain’s Fish-Fri and Chick-Fri Case – A deep dive into when a descriptive name becomes “iconic” enough to own.
The Bundt Cake Trademark – How a specialized pan became a legal battleground for a generic-sounding name.

Smells Like Trademark Infringement: The Nirvana Case

This cookie battles is not the first time trademark disputes have been entered to defend someone ownership of a smiley. The band Nirvana sued fashion designer Mark Jacobs in 2018 for his use of a smiley face that resembled theirs. Nirvana’s smiley face was the reverse of the iconic design by Ball, a yellow face appearing on a black background. What’s more, the circle and mouth curves are messy and the eyes are Xes instead of dots. Jacobs used a similar design but the letters M and J were used for eyes instead of Xes. Nirvana was also sued by Robert Fisher, a former art director at Geffen Records who claimed to have designed the Smiley.

The Smiley Face Identity Crisis: Beyond the Bakery

It’s often difficult to determine what is meant by the term “Smiley Face.” Is it any circle with two dots for eyes and a curved line for a smile? Or is it more like the “smiley” we use as an emoticon on the internet? This Smiley, with its yellow background, was created in 1963 by American graphic designer Harvey Ball. He was commissioned by State Mutual Life Assurance Company to create an image for their employees intended to boost morale. But this design is a specific smiley face.

And then there is the Smiley Company. While Ball created the yellow-background smiley another man across the pond makes $500 million a year on it while Ball himself was paid a whopping $45 for his ten minutes of work designing it. It is widely held that this was the first smiley ever created but this is, of course, preposterous as the smiley face is how anyone would make a face when drawing a stick-figure person. Such simple representations of a smiling human face, what we used to call a “happy face” in America, have been found on 4000 year old pottery from Turkey. You can even see it inscribed on letters from the 1800s like this one.

The Forrest Gump Smiley Button: Have a Nice Day

After Ball created his iconic smiley, it quickly went mainstream. Two brothers made a mint on it after they put it on a button with the words “have a nice day.” This was referenced in the movie Forrest Gump when Gump was running across the country and was stopped by a man who wanted to put his face on a t-shirt. As Gump tells it, the man didn’t have a camera and couldn’t draw well but it just so happened that a truck came by and splashed mud all over Gump’s face. The man hands him a t-shirt and Gump wipes his face, leaving an imprint of what was to become the Smiley with the words “Have a Nice Day” under it.

In 1971, a man in France named Franklin Loufrani created his own smiley face which looked a lot like Ball’s. Ball had never trademarked his, but Loufrani did. He sought to license the symbol to other companies to use but this was an unknown and untested business model at the time. After he gave out 10 million stickers with the face on it to students, it became popular enough that companies came to him clamoring to be able to use it. His first big deal was with Mars Candy Company, who printed the face on its packages of Bonitos, which were what M&Ms were called in Europe at the time.

Loufrani’s huge digital business, The Smiley Company, was not actually formed until much later, in 1996, and the company had to fight many court battles, including a ten-year-long one with Walmart, to keep its trademark.

Today, The Smiley Company brings in nearly $500m per year in licensing deals, with companies like Nutella, Clinique, McDonald’s, Nivea, Coca-Cola, VW, and Dunkin’ Donuts.

Generic Trademarks

I am surprised that such a widespread design and names as the “smiley” would not be deemed generic. A generic trademark is a trademark that is merely a generic name for some class of products or services. Unless you can claim to have invented the smiley face, you cannot point to being the sole source of cookies, or anything else, with smiley faces on them. So, while it may be possible to obtain such a trademark, there is no guarantee of keeping it once a court gets involved.

It is even possible for the reverse to occur. A trademarked name for a product, when it becomes, through prolonged and widespread public usage, a generic name for that class of products, can lose its trademark status.

It may surprise you to know that the term cheeseburger was once a trademarked term. However, it serves as a sort of Schrödinger’s Cat of food law. Because the owner never chose to defend or litigate the mark, its legal status was never truly tested. It remained a ‘theoretical’ trademark that simply faded into the background of common language. In contrast, companies like Eat’n Park avoid this ambiguity by aggressively litigating, ensuring their ‘Smiley’ doesn’t suffer the same quiet fate as the cheeseburger

I’ve brought up other such examples in past articles. Both the terms shredded wheat and thermos were once trademarked but both lost their trademark status due to becoming generic terms. Shredded wheat was probably generic or at least descriptive to begin with. It is a simple description of the cereal product it named.

Lite Beer also used to be a trademarked term but was lost due to it being determined generic, as Lite is just a common alternative spelling of light. You can read much more about such cases here.

Descriptive Trademarks

Sometimes the term generic is differentiated from the term “descriptive” in trademark cases but they both come down to the same thing. Shredded wheat is a descriptive term and could only be a valid trademark if it acquired a “secondary meaning.” In other words, the public would have to recognize that the mark refers to a particular product that comes from one source.

We can ask whether “Smiley Face Cookie” is a descriptive term. We can also ask whether the public recognizes that the product comes from a single, unitary source.

Suggestive Trademarks

In other cases, trademarks are found to be “suggestive.” This means that the mark implies the nature of a product or service but does not say it. In this case, it requires some imagination to link the trademark to the product and other products are “imaginable.” Pizza Rolls is one such example. The court concluded that

The term Pizza Rolls could suggest a number of items, including small pizzas, pizza rolled up, pizza flavored candy, or a bread dough filled with pizza flavoring. It takes imagination and thought to perceive the nature, quality, characteristics or ingredients of plaintiff’s products based upon the mark PIZZS ROLLS, all of which clearly indicate the term is suggestive.

This means that a mark that is suggestive is considered distinctive. If you choose a name for your product that could conceivably describe many other products, and you don’t say exactly what your mark refers to, then your mark is neither generic nor descriptive, by law. A Google search brought up another example of a strong suggestive trademark: Coppertone for a suntan lotion or sunscreen. It may suggest that using it will make your skin look like copper but it does not outright state this.

In the 1930s, two different courts had a tough time deciding whether “Chicken of the Sea” for canned tuna was descriptive or suggestive (It’s clearly suggestive).

Is “Smiley Face Cookie” a suggestive mark? What other items could it describe besides a cookie with a smiley face on it? It seems to be a precise description of the product. I cannot imagine other products, but if there is a reasonable range of other suggestions, then the mark may be upheld on this basis.

We do not have to consider whether the trademark Smiley Face Cookies is arbitrary or fanciful. It certainly is not. You cannot trademark the term “apples” for actual apples, but you can trademark the term for computers. You cannot trademark the term “ice” for actual ice, but you can trademark it for chewing gum.

It will be interesting to see whether this case is resolved privately or whether it is taken to court. I have no idea what a court might find, but I would suggest that the trademark holder not be quick to assume they have this one in the bag. For that matter, I wonder how long the symbol will be a multi-million dollar business The Smiley Company.

Update: Once Again, The Big Company Wins

The Smiley Face Cookie Company in St. Louis feels it has no choice but to bow to the wishes of Eat’n Park Corporation. While they feel they could successfully defend their use of the name in court, they lack the financial resources to do so. Therefore, they are going to come up with another name for their cookies. McArthur’s Bakery is enlisting the help of the public to help choose a name. I suggest “The Cookies Formally Known as Smiley Face Cookies.”

The tragedy of the Smiley Face Cookie case is that deep pockets, instead of law, often decides the outcome. McArthur’s had the precedence, but Eat’n Park had the legal war chest. By successfully forcing a rebrand, they’ve essentially turned a generic cultural symbol into a ‘proprietary’ asset through sheer attrition.